T 2701/19 - Amendment in the appeal reply brief

Key points

• The opponent presents new inventive step attacks in its reply to the proprietor's appeal. The admissibility of these attacks is governed by Art. 12, not by Art. 13 RPBA, right?
• The Board finds that the admissibility is governed by Art. 13. The reason is that both the opponent and the proprietor appealed, and the attacks applied equally to the main request and to the set of claims held allowable by the OD (auxiliary request). 
• "In the decision under appeal, the opposition division solely assessed the inventive step of this [auxiliary request] based on a problem/solution approach starting from the disclosure in document D13b [in combination with D6]
• "With its appeal, appellant II [opponent] did not submit that this part of the decision under appeal starting from the disclosure in document D13b was wrong; rather, it limited itself to submitting a [new inventive step attack starting from D6]. Appellant II, on appeal, was thus no longer pursuing the line of attack based on the disclosure in document D13b representing the closest prior art, with the consequence that, for this part, the appealed decision became final.
• " It was only with the reply to the appeal of [the patentee] in the context of the claims of the current main request, that appellant II [opponent] submitted arguments asserting that the subject-matter of claim 2 of the main request lacked an inventive step based on an analysis starting from the disclosure in document D13b representing the closest prior art in combination with the disclosure in document D6. In relation to claim 1 of auxiliary request 3, the reply contains merely the cursory remark, [that AR3 lacks] an inventive step over the disclosure of D6 in combination with D13B [for the same reasons]."
• "Accordingly, it was not until the reply stage of appellant I's appeal that appellant II, as the respondent to this appeal, submitted arguments as to why the decision under appeal should be reversed with regard to this auxiliary request. However, Article 12(3) RPBA requires that the statement of grounds of appeal set out the reasons why the appellant is requesting that the decision under appeal be reversed.
• "The board holds that the introduction of the arguments based on the disclosure in document D6, representing the closest prior art in relation to claim 1 of auxiliary request 3, constitutes an amendment to appellant II's case, which may be considered at the board's discretion pursuant to Article 13(1) RPBA."

 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t200247eu1.html

Admittance of a line of attack that had not been pursued with the statement of grounds of appeal

41. In the decision under appeal, the opposition division solely assessed the inventive step of this claim request based on a problem/solution approach starting from the disclosure in document D13b, which represented the closest prior art, in combination with the secondary disclosure in document D6 (see point 12 et seq. of the decision under appeal).

42. With its appeal, appellant II did not submit that this part of the decision under appeal starting from the disclosure in document D13b was wrong; rather, it limited itself to submitting a new line of attack according to which the subject-matter of claim 1 lacked an inventive step starting from the disclosure of document D6 representing the closest prior art (see point 36. above). Appellant II, on appeal, was thus no longer pursuing the line of attack based on the disclosure in document D13b representing the closest prior art, with the consequence that, for this part, the appealed decision became final.

43. It was only with the reply to the appeal of appellant I (see section VII above), in the context of the claims of the current main request, that appellant II submitted arguments asserting that the subject-matter of claim 2 of the main request lacked an inventive step based on an analysis starting from the disclosure in document D13b representing the closest prior art in combination with the disclosure in document D6. In relation to claim 1 of auxiliary request 3, the reply contains merely the cursory remark, as an add-on in point 5, that for "all of the reasons discussed above in respect of claims 2 as well as claims 15-18 of the MR, claim 1 (as well as claims 2-4 and 14-17) of AR3 lack an inventive step over the disclosure of D6 in combination with D13B."

44. Accordingly, it was not until the reply stage of appellant I's appeal that appellant II, as the respondent to this appeal, submitted arguments as to why the decision under appeal should be reversed with regard to this auxiliary request. However, Article 12(3) RPBA requires that the statement of grounds of appeal set out the reasons why the appellant is requesting that the decision under appeal be reversed.

45. The board holds that the introduction of the arguments based on the disclosure in document D6, representing the closest prior art in relation to claim 1 of auxiliary request 3, constitutes an amendment to appellant II's case, which may be considered at the board's discretion pursuant to Article 13(1) RPBA.

46. The board noted in the communication pursuant to Article 15(1) RPBA (see section VIII above) that it was unable to identify in appellant II's reply any reasons for introducing the arguments based on the disclosure in document D6 representing the closest prior art, which had not been pursued at the stage of filing the statement of grounds of appeal (see point 38 of the board's communication). In response to the board's communication, appellant II neither argued that the board had overlooked such arguments in its statement of grounds of appeal nor submitted arguments to justify the filing of the arguments at the reply stage.

47. Thus, in view of the current state of the proceedings and the circumstances in the case at hand, namely i) that no reasons have been provided for the late filing and ii) that the appellants have withdrawn their requests for oral proceedings in response to the board's communication pursuant to Article 15(1) RPBA (see section IX above), and with a view to further procedural economy, the board has decided neither to admit nor to consider appellant II's late-filed line of argument in the appeal proceedings (Article 13(1) RPBA).

Conclusion

48. In view of the above considerations, the board has not seen any convincing arguments from appellant II that the decision of the opposition division, namely that the patent as amended in the form of the version of auxiliary request 3 that was filed during the oral proceedings in the opposition proceedings (and re-submitted in the appeal proceedings) and the invention to which it relates meet the requirements of the EPC, was wrong.

49. It follows that appellant II's appeal must be dismissed.